The Trademark Registry on 31st
March, 2016 declared almost 5, 00, 00 (five lakh) trademark
applications as abandoned. This fired a discussion among trademark
professionals because such move of the Trademark Registry may not
be in compliance with Rule 38(4) and Rule 38(5) of the Trademark
Rules, 2002. Rule 38(4) states that after the examination report is
issued, a period of 30 days is granted to the Applicant to file a
response to the report; a request for extension of time can also be
made by the Applicant. This 30 days period begins from the date of
receipt of communication i.e. the day when the report is received
by the Applicant (rule 38 (5)).
A reading of rule 38(5) makes it
evident from its language that there are four opportunities to be
granted to an Applicant before declaring an Application as
abandoned. A mark shall be deemed abandoned if the Applicant:
1. Fails to amend his application
according to the proposal ;or
2. Fails to submit his observations
to the Registrar; or
3. Apply for a hearing; or
4. Fails to attend the hearing.
If the Applicant fails to comply
with the abovementioned alternatives, the Registrar has to fixing a
hearing (the fourth alternative in Rule 38(5)), and if the
Applicant is not present on the date of hearing, the mark can be
declared as abandoned by the Registrar. A non-compliance of these
provisions, by the Trademark Registrar, will be considered as a
violation of the principles of natural justice since, the Applicant
would not have been given an opportunity to present its case for
defending its mark.
In light of this legal
understanding of Section 38, Writ Petitions 3043/2016 and 3067/2016
were filed before the Hon'ble Delhi High Court. The Court upon
looking at the large number of abandonments stayed the Trademark
Registry's orders. All the authorized trademark agents can now
file their reply to the examination reports containing the
objections (which were declared abandoned) through a comprehensive
e-filing services as available on the trademark registry's
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).